Ex parte Gross

“And/Or” § 112(b) Claim Indefiniteness Issues

Last week in Ex parte Gross, __ WL ___ (PTAB 2014)(Mantis Mercader, J.), the panel reversed a rejection of claims for indefiniteness under what today is 35 USC § 112(b) based solely upon the use in the claim of the “disjunctive conjunction ‘and/or'”, In re Herrick, 344 F.2d 713 (CCPA 1967)(“disjunctive conjunction ‘and/or'”).

Win at the Patent Office, but what Happens if the Patent is enforced? One may question the wisdom of the use of the disjunctive conjunction in patent claims as they create unnecessary challenges before the Examiner (as here) but, more importantly, leave the question of patent validity an open book as seen in the Bushnell case:

“A claim is indefinite when an ‘and/or’ construction requires separate infringement determinations for every set of circumstances in which the claim may be used, and such determinations are likely to result in differing outcomes (sometimes infringing and sometimes not).” Bushnell, Inc. v.
Brunton Co.
, 673 F. Supp. 2d 1241, 1256 (D. Kansas 2009)(citing Halliburton Energy Servs., Inc., v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)).

An Established Meaning: As explained in the Pavilion case:

“According to [the patent challenger], the use of the term “and/or” renders the entire claim fatally indefinite. [The patent challenger] feigns confusion over the meaning of this phrase *** However, most, if not all, ordinary speakers of the English language should recognize that “and/or” has a particularized meaning that is distinct from the individual words “and” and
“or.” See AM. COLLEGE HERITAGE DICTIONARY 53 (4th ed. 2002) (describing “and/or” as a conjunction “[u]sed to indicate that either or both of the items connected by it are involved”).” Pavilion Techs., Inc. v. Emerson Elec. Co., 2006 U.S. Dist. LEXIS 100913 (W.D. Tex. 2006).

About Harold Wegner (756 Articles)

HAROLD C. WEGNER

Partner

Foley & Lardner LLP

202.672.5571
hwegner@foley.com

Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.